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Mandatory Discovery is Only for Information Shown to be Inconsistent

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097, Paper 16 (June 23, 2014) the patent owner sought mandatory discovery of the prosecution history of an abandoned patent appliaction by petitioner, arguing that petitioner made arguments about the prior art that were inconsistent with its interpretation of the prior art in the Petition. Petitioner objected that the information had previously been produced in a lawsuit between the parties, and that it was unduly burdensome to produce it again. The Board sidestepped the question finding that there was no proof that there were inconsistent statements, and thus the discovery was not mandatory discovery. The Board instructed the Patent Owner to investigate other methods of obtaining the information it seeks, including a review of the documents produced in the related litigation, to the extent permitted. If, after doing so, Patent Owner is unable to obtain the necessary information, Patent Owner is authorized to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2).

About Bryan Wheelock

Education
J.D., Washington University in St. Louis
B.S.E. in Mechanical Engineering, Duke University
Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods.
Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies.
In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.